`ESTTA697953
`ESTTA Tracking number:
`09/24/2015
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`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91221566
`Defendant
`JS Products, Inc.
`PAUL G JUETTNER
`GREER BURNS & CRAIN
`300 S WACKER DR STE 2500
`CHICAGO, IL 60606
`UNITED STATES
`pjuettner@gbclaw.net, tproehl@gbclaw.net, tmdocket@gbclaw.net
`Reply in Support of Motion
`Tanja Proehl
`tproehl@gbclaw.net, tmdocket@gbclaw.net
`/Tanja Proehl/
`09/24/2015
`Reply 91221566.pdf(465749 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Opposition No. 91221566
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` Serial No. 86/429,094
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`v.
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`Stanley Logistics, LLC,
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`Opposer,
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`JS Products Inc.,
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`Applicant.
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`APPLICANT’S REPLY TO OPPOSER’S OPPOSITION TO
`APPLICANT’S MOTION TO DISMISS THE AMENDED
`NOTICE OF OPPOSITION FOR FAILURE TO STATE A CLAIM
`UNDER RULE 12(b)(6) WITH RESPECT TO OPPOSER’S COUNT II
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`Applicant JS Products Inc., (“Applicant”) submits this reply in response to
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`Stanley Logistics, LLC’s (“Opposer”) opposition to Applicant’s Motion to Dismiss the
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`Amended Notice of Opposition for failure to state a claim upon which relief may be
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`granted with respect to Count II.
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`In its Motion to Dismiss, Applicant argued that
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`(1) Opposer has not (and cannot) sufficiently plead deceptiveness under
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`Section 2(a) of
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`the Trademark Act because Applicant’s Mark
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`“PROTOCOL” is incapable of misdescribing the character, quality,
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`function, composition or use of the recited goods (“deceptiveness claim”),
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`and
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`(2) Opposer has not (and cannot) sufficiently plead a ground of false
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`suggestion of a connection under Section 2(a) of the Trademark Act (“false
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`suggestion claim”).
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`In its Response, Opposer did not address the deficiency in its deceptiveness claim,
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`and accordingly concedes that that Applicant’s Mark cannot misdescribe the recited
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`goods. Thus, the Board at a minimum must strike paragraph 20 of the Amended Notice of
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`Opposition that is directed to the deceptiveness claim.
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`In its Response on the false suggestion claim, Opposer does not proffer any new
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`allegations from which one could infer that PROTO is anything more than a trademark of
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`Opposer, as distinguished from Opposer’s name or identity. Opposer has instead rested
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`on its conclusory allegations which are insufficient. Accordingly, the remainder of Count
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`II must be striken.
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`Leave to further amend should not be granted because the Board previously
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`granted Opposer an opportunity to amend and Opposer has not shown that it has a viable
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`Section 2(a) claim. Opposer’s request for another bite at the apple should be denied.
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`WHEREFORE, Applicant prays that its motion be granted and the Amended
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`Notice of Opposition be dismissed with respect to Count II.
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`Respectfully submitted,
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`By: ___/s/ Tanja Proehl______
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`Paul G. Juettner
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`Tanja Proehl
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`Attorneys for APPLICANT
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`GREER, BURNS & CRAIN, LTD.
`300 South Wacker Drive
`Suite 2500
`Chicago, Illinois
`Telephone: (312) 360-0080
`Facsimile: (312) 360-9315
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`CERTIFICATE OF SERVICE
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` hereby certify that a true and complete copy of the foregoing APPLICANT’S
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` I
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`REPLY TO OPPOSER’S OPPOSITION TO APPLICANT’S MOTION TO DISMISS
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`THE AMENDED NOTICE OF OPPOSITION FOR FAILURE TO STATE A CLAIM
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`UNDER RULE 12(b)(6) WITH RESPECT TO OPPOSER’S COUNT II has been served
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`upon the following counsel for Opposer:
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`James R. Davis, II
`Arent Fox LLP
`1717 K Street, NW
`Washington, DC 20006-5344
`davis.jim@arentfox.com
`mitchell.justine@arentfox.com
`TMdocket@arentfox.com
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`by email as agreed upon, on this 24 day of September, 2015.
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`By:
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`__/s/ Tanja Proehl_____
`Tanja Proehl
`Attorney for APPLICANT
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`4
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